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What I'm trying to do is to use a technology or "invention" for my own invention. In other words I want to use that technology for my own purpose and invention to get completely different results. There was an attempt to patent the technology/invention a few years ago but it was never granted.

Can I replicate the invention/technology if the patent was never granted and is still as "application"? I want to replicate it because the invention/technology does 2 things, and the invention was patented for one use, but it has many other applications, but in order to use those other applications I need the invention.

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It's risky.

You cannot be sued for patent infringement unless a patent has been granted (that is, it is no longer just an application). So if the patent is never granted, you will be fine.

However, if the patent does grant one day, you may be liable to pay a "reasonable royalty" for the time that you infringed the claims of the patent application between when the patent application was published and the patent is granted (which is the period you are currently in).

For this reasonable royalty to apply, you must have actual notice of the published patent application (35 USC § 135(d)(1)(B)) (such as a letter bringing the application to your attention) and the claims in the granted patent must be "substantially identical" to the claims in the published patent application (35 USC § 135(d)(2)).

It could be a good idea to check the claims of the application in the file wrapper at the USPTO, since they may have been amended since the application was originally published. In this case, a patent would be very unlikely to grant with "substantially identical" claims, so there would be no reasonable royalty.

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I'm not sure you've been given the right analogy yet. Let's say the patent was for a mechanism for a folding chair. If your idea is a way of using the mechanism for a folding wheelchair, you may get a patent, but would likely need a license for the original patent to market the product. If however, your idea is a way of using the mechanism for an umbrella, you would probably be able to get a patent and not have to license the original patent. That said, you need to carefully consider all the claims and other umbrella patents too. An opinion from a patent attorney is important.

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The only thing that is important if you can claim your invention. It must have some novelty that was never mentioned before in any type of public way, and the specification you provide will allow someone to make it work according to your claim. The best way is to consult someone that knows how patents work.

  • Yes. My invention has a completely new outcome. But like I made clear, it would be using the previous invention, but with a different outcome. So could I use the previous invention? – Jose Lopez Aug 22 '15 at 0:18
  • The question how you are planning to use it differently. Again, if you can claim it, it can be patented. – Moti Aug 22 '15 at 0:26
  • Because their invention is only using 1 implication out of 2 available. All I want is to be able to use their invention for the other implication that they are not using it for. And since the invention was never granted a patent I was to asking if I could. What would be your advice? – Jose Lopez Aug 22 '15 at 0:53
  • I will iterate, if you want to patent your idea it must be claimed in some way. The question is why their patent was not granted. You need to understand that their application becomes prior art. You still can patent your idea, and you may do it by creating an independent claim that include your idea. What I suggest that you will write it clearly for yourself and than consult under NDA an expert or a patent attorney. – Moti Aug 22 '15 at 1:08
  • @JoseLopez I recommend reading through the earlier application's Image File Wrapper documents in the USPTO Public Pair database for clues as to why the patent was not granted. – vallismortis Aug 30 '15 at 17:48
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Example:

The wheel was granted a patent and has an abundance of uses in many different processes. What is covered in the wheels patent depends on what is disclosed within the patent and its claims. If a process using the wheels invention is not disclosed within the patent or its claims and an application for this process can be proven to be unique, useful and different to what has ever been publicly known before then a patent is likely to be granted.

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